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USE OF “TM” SYMBOL WITH SAE’S
STANDARDS IDENTIFIER TRADEMARKS
As you may have noticed, SAE International (SAE) has recently started to place the
“TM” symbol in conjunction with its standards identifier trademarks (e.g., J1349™,
AS9100™) on new SAE standards. As existing SAE standards are revised, the “TM”
symbol will be added to the trademarks at that time. Over the course of 5-8 years,
essentially all of SAE’s standards will have the “TM” symbol in place with its
standards identifier trademarks (or the ® symbol for those trademarks that have
been officially registered with the U.S. Trademark Office).
This action by SAE will NOT have any impact on users of SAE’s standards, whether
they are OEMs, suppliers, government agencies or regulators, or individuals. There
is absolutely no need for users to update their technical design or process
documents, standards reference numbers, software, parts, etc. to reflect or add the
“TM” symbol – SAE’s user groups are in no danger or threat of any trademark
conflict with SAE.
This action is being taken by SAE to avoid the market confusion caused by other
Standards Developing Organizations (SDOs) adopting the same SAE unique
identifier for their standards or attempting to pass off authentic SAE standards as
their own. SAE’s user groups and the public at large need to be able to rely on
SAE’s unique identifiers to indicate the source, authenticity and quality of an SAE
standard. Unless you or your company intends to market or sell its own standards
and use SAE’s standard identifiers on those standards, then you will not be impacted
by SAE actions and do not need to be concerned.
To add some further context, please understand that the existence of standards
trademarks is not a new phenomenon. SAE’s and other SDOs’ unique identifiers
have operated as trademarks -- to identify SAE and the other SDOs as the source
and publisher of their respective standards -- since they were first developed and
used (which, for many, were decades ago).
To further address any questions that you or your organization may have regarding
SAE’s standards trademarks and its new practice of adding the “TM” symbol to its
standards identifiers, the attached FAQs have been prepared. Thank you for your
continuing support of SAE International and its standards program.
FAQs ON USE OF THE “TM” SYMBOL WITH SAE INTERNATIONAL’S
STANDARDS TRADEMARKS
Q1: What concern is SAE trying to address by adding the “TM” symbol to its unique,
alphanumeric identifiers (e.g., J1349, AS9100) for standards?
A1: SAE is trying to prevent other standards developing organizations (SDOs) from
using SAE’s unique identifiers to identify their own standards, which will cause
market/customer confusion regarding the source and quality of the standards.
Q2: Do SAE’s actions impact OEMs, suppliers or other users of SAE standards?
A2: No, SAE’s addition of the “TM” symbol does not in any way impact OEMs’,
suppliers’ or other users’ use of SAE standards. The user groups of SAE standards
do not have to change any current behavior or comply with any new SAE directive or
policy. It is “business as usual” for SAE user groups. For example, no changes or
revisions to drawing callouts or reference numbers on technical documents or
internal standards, purchase requisitions, order and bill of materials, or internal
labeling of parts bins, or parts stamped with the standard number, will have to be
made to include the “TM” symbol. Not only are these customary uses already
permitted under trademark law and therefore not impacted by SAE’s use of the “TM”
symbol, but SAE expressly gives permission to all user groups to continue using
SAE’s standards according to current customary and industry practice.
Q3: Why does SAE International (“SAE”) believe it has trademark rights in their
standards identifying numerals?
A3: Like most (if not all) standards developing organizations (SDOs), SAE assigns a
unique alphanumeric identifier (e.g., J1349, AS9100) for each standard that it
publishes. SAE’s and other SDOs’ unique identifiers are trademarks that function to
identify SAE International and the other SDOs as the source and publisher of their
respective standards. Market confusion is also prevented by SDOs using their own
unique standard identifiers.
Q4: I thought copyright protected SAE’s standards? What intellectual property does
trademark rights protect?
A4: Yes, copyright does protect SAE’s standards, but only against the actual copying
of the technical content (e.g., text, images, charts, diagrams) of the standard.
Trademark does not protect the content of the standard; rather, it is very specific and
prevents third-party SDOs from using the unique SAE standard identifier (e.g.,
J1349, AS9100) on its standards. Unless you or your company intends to market or
sell its own standards and use SAE’s standard identifiers on those standards, then
you will not be impacted by SAE actions and do not need to be concerned.
Q5: Why is the “TM” symbol now being placed after the unique identifier on SAE
standards?
A5: The unique identifier has operated as a trademark of SAE (and other SDOs)
since they were developed. However, to prevent the market confusion caused by
third parties adopting the same SAE unique identifier for their standards or
attempting to pass off authentic SAE standards as their own, SAE is now proactively
taking steps to notify the public that it can rely on SAE’s unique identifier to indicate
the authenticity and quality of an SAE standard.
Q6: Will OEMs, suppliers, government agencies and other user groups need to
revise their current and future technical documents that reference SAE standards to
include the “TM” symbol.
A6: No, technical documents that reference SAE standards by their unique identifiers
will not have to be revised to include the “TM” symbol. The customary use of SAE
standards will not be affected or impacted by SAE’s inclusion of the “TM” symbol
with the unique identifier. You will not be subject to legal action by SAE because the
customary use of SAE standards (e.g., in regulations, technical process or design
documents or software) does not constitute a trademark conflict.
Q7: Does the “TM” symbol apply to the entire unique identifier (e.g., AS39029) or
just the numeric portion (e.g., 39029)?
A7: It depends, but in the large majority of cases it will apply to the entire unique
identifier (AS39029). The distinction depends on whether SAE is entitled to treat the
entire unique identifier as its trademark. Over SAE’s many decades of developing
standards, there have been a small number of instances where third parties have
used SAE’s alpha identifiers for related (e.g., aerospace) and unrelated (e.g.,
medical) standards. SAE does not intend to and will proactively avoid infringing on
the legitimate trademark rights of other SDOs.
Q8: Will a parts manufacturer (or OEM, supplier or parts reseller) which uses an SAE
standard designator as a part number or packages, labels, or otherwise includes
information with its parts that refer to the SAE standards designator, have to retool to
now stamp parts with the TM symbol?
A8: No, SAE’s addition of the “TM” symbol does not in any way impact parts
manufacturers’ (or OEMs’, suppliers’ or resellers’) or require them to retool or
change their packaging, labeling, or marketing materials, or prevent them from
selling existing inventory.
Q9: Will a party who performs test protocols to SAE standards (e.g., OEM, parts
manufacturer, or laboratory) have to revise procedures, internal quality
documentation (ISO 17025 test procedures, ISO/TS 16949, etc.), or marketing
materials (printed and online media), to add the TM symbol?
A9: No, SAE’s addition of the “TM” symbol does not in any way impact the reports,
documents or processes used by parties performing test protocols to SAE
standards.
Q10: Does a government agency which has adopted an SAE standard have to
change any rulemaking documents or adoption notices to now include the TM
symbol?
A10: No, government agencies will not have to adjust their rulemaking documents or
adoption rules to include the TM symbol.
Q11: Does a standards developing organization which produces standards that
reference SAE standards (e.g., AIA aerospace part standards) have to reissue their
standards to change the SAE standards designator to include the TM symbol?
A11: This would be a matter between SAE and the third-party SDO and already may
be addressed through contracts, but generally as long as the reference to SAE
standards is not likely to cause market confusion as to the true source of the SAE
standards, then SAE will probably not be concerned.
Q12: Does a standards developing organization which has historically used the
same designator as SAE (e.g., the Australian Standards organization uses ASxxxx)
have to withdraw its standard? Is it prevented from using the next logical number in
its numbering sequence if SAE has that number?
A12: This would be a matter between SAE and the other SDO, and the legal
analysis depends on a number of product, market and customer factors. If the SDO
issues standards that are not mobility-related, there may not be any concern around
market confusion.
Q13: Does a third party reseller of SAE standards which maintain indexes, search
engines, and other tools which list or reference SAE standards have to change its
tools, on-line systems, search engines, etc., to add the TM symbol to the standards
designator?
A13: SAE has contractual agreements with its resellers regarding IP and other
matters.
Q14: In what instances or scenarios will the inclusion of the TM symbol as part of the
standards designator be required?
A14: Unless you are an SDO or other person or group that is causing a conflict with
SAE’s trademarks by marketing or selling mobility-related standards using SAE’s
standards identifiers, or by attempting to pass-off your standards-related products as
SAE standards or products, then continue doing what you had been doing prior to
SAE including the TM symbol with its trademarks.